Major Changes to Patent Act and Rules Coming into Force

Further to an Order in Council dated June 22, 2019, and published today (July 10, 2019) in the Canada Gazette Part II under SOR/ 2019-0251, sweeping amendments to the Patent Act and Rules are scheduled to come into force on October 30, 2019 (the “CIF date”). 

The various amendments include, but are not limited to, a simplification of filing date and assignment requirements, a requirement for certified copies of priority documents, a modification to the abandonment/reinstatement procedure for maintenance fees and requests for examination (including the addition of due care requirements and third party rights), a shortening of deadlines to request examination (to 4 years from the filing date) and to respond to Examiner’s Reports and Notices of Allowance (to 4 months), and an opportunity to restore unintentionally-missed priority claims, among other changes. 

Of particular note to international applicants is the removal of 42-month late national phase entry as of right.  For PCT applications having an international filing date after the CIF date, late entry into Canada (i.e. beyond 30 months from the earliest priority date, but before 42 months) will require a statement that the failure to enter at 30 months was “unintentional”.  The proposed transitional provisions indicate that applications having an international filing date before the CIF date, and entering Canada during this late entry period, will be exempt from providing a statement of unintentionality.  However, PCT applicants should now docket entry into Canada at 30 months from priority and, if the application is currently within the 30-42 month late period, consider entering Canada at the earliest opportunity.

The final consultation period on the proposed amendments to the Manual of Patent Office Practice (MOPOP) from the Canadian Patent Office has just recently ended.  Therefore, we expect to receive more guidance on office practice in the coming months.  We will continue to post updates as they become available, and invite you to consult a member of our team for further information.

This blog entry is for information purposes only and does not constitute legal or professional advice.